Case 6:16-cv-01087-CEM-KRS Document 1 Filed 06/21/16 Page 1 of 7 PageID 1
`Case 6:16—cv—O1087—CEM—KRS Documentl Filed 06/21/16
`
`
`
`.$§Y@
`Cllfikfiv U3. §3l»3'T'§.KC"f CCNJET
`MIDDL% ?Di$'i‘?L.iC".i‘ CW7 WI.
`.
`'
`UNITED STATES DISTRICT COURT
`_OMANm‘ ,.LOm9fmD"
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION -
`
`LIGHTING SCIENCE GROUP
`
`CORPORATION,
`
`Plaintiff,
`
`v.
`
`AMERICAN DE ROSA LAMPARTS, LLC
`d/b/a LUMINANCE
`
`Defendant.
`
`/
`
`JURY DEMANDED
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Lighting Science Group Corporation, through its attorneys, alleges the following:
`
`PARTIES
`
`1.
`
`I
`
`Plaintiff Lighting Science Group Corporation (“LSG”) is a corporation organized
`
`and existing under the laws of the state of Delaware with its principal place of business located at
`
`81 1 N. Atlantic Avenue, Cocoa Beach, Florida 32931.
`
`2.
`
`Upon information and belief, Defendant American De Rosa Lamparts, LLC
`
`(“Defendant”) is a company, doing business as Luminance, and is organized and existing under
`
`the laws of the state of California with its principal place of business located at 1945 S. Tubeway
`
`Avenue, Commerce, California 90040, but does business throughout the United States, including
`
`Florida and whose registered agent is CT Corporation located at 818 West Seventh Street, Suite
`
`930, Los Angeles, California 90017.
`
`JURISDICTION AND VENUE
`
`3.
`
`This is a claim for patent infringement and arises under the patent laws of the Unit
`
`Page 1 of 7
`
`

`
`Case 6:16-cv-01087-CEM-KRS Document 1 Filed 06/21/16 Page 2 of 7 PageID 2
`Case 6:16—cv—O1087—CEM—KRS Document 1 Filed 06/21/16 Page 2 of 7 Page|D 2
`
`States, Title 35 of the United States Code. This Court has jurisdiction over the subject matter of
`
`this claim under 28 U.S.C. §§ 1331 and 1338(a). A
`
`4.
`
`This Court has personal
`
`jurisdiction over Defendant because Defendant
`
`is
`
`transacting business within this District and has committed acts and, on information and belief,
`
`will continue to commit acts within this District giving rise to this action, including offering to sell
`
`and selling infringing products and/or placing infringing products, directly or
`
`through
`
`intermediaries (including distributors, retailers, and others), into the stream of commerce in such
`
`a way as to reach customers in this District. Defendant has purposefully and voluntarily sold one
`
`or more of its infringing products with the expectation that they will be purchased by consumers
`
`in this District. These infringing products have been and continue to be purchased by consumers
`
`in this District. Defendant has committed acts of patent infringement within the United States and
`
`more particularly, within this District.
`
`5.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and 1400(b).
`
`COUNT I
`
`(Infringement of U.S. Patent No. 8,201,968)
`
`6.
`
`7.
`
`Plaintiff repeats and re-alleges Paragraphs 1-5 as though fully set forth herein.
`
`Plaintiff is the owner by assignment of United States Patent No. 8,201,968, entitled
`
`“Low Profile Light,” which was duly and legally issued by the United States Patent and Trademark
`
`Office (“USPTO”) on June 19, 2012 (the “‘968 Patent”). A true and correct copy of the ‘968 Patent
`
`is attached hereto as Exhibit A.
`
`8.
`
`The ‘968 Patent is valid and enforceable and Plaintiff has the full right to recover
`
`for past infringement damages and the right to recover future royalties, damages and income.
`
`9.
`
`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff, and
`
`all predecessors in interest and/or implied or express licensees of the ‘968 Patent, if any, have
`
`Page 2 of 7
`
`

`
`Case 6:16-cv-01087-CEM-KRS Document 1 Filed 06/21/16 Page 3 of 7 PageID 3
`Case 6:16—cv—O1087—CEM—KRS Document 1 Filed 06/21/16 Page 3 of 7 Page|D 3
`
`complied with the marking requirements of 35 U.S.C. § 287 by placing a notice of the ‘968 Patent
`
`on all goods made, offered for sale, sold, and/or imported into the United States that embody one
`
`or more claims of that patent and/or providing actual or constructive notice to Defendant.
`
`10.
`
`Upon information and belief, Defendant has infringed and will continue to infringe
`
`at least Claims 1, 2, 14, 15, 16 and 18 of the ‘968/Patent by, among other activities, making, using,
`
`selling or offering to sell in or importing into the United States its F9908-30 product. Defendant is
`
`liable for direct infringement, either literally or under the doctrine of equivalents pursuant to 35
`
`U.S.C. §271 (a).
`
`11.
`
`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
`
`the ‘968 Patent.
`
`12.
`
`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
`
`damages adequate to compensate it for such infringement.
`
`l3.
`
`Defendant’s infringing activities have injured and will continue to injure Plaintiff,
`
`unless and until this Court enters an injunction prohibiting further infringement and, specifically,
`
`enjoining further manufacture, use, sale, importation, and/or offer for sale of products that come
`
`within the scope of the claims of the ‘968 Patent.
`
`COUNT II
`
`(Infringement of U.S. Patent No. 8,672,518)
`
`14.
`
`15.
`
`Plaintiff repeats and re-alleges Paragraphs 1-5 as though fully set forth herein.
`
`Plaintiff is the owner by assignment of United States Patent No. 8,672,518 entitled
`
`“Low Profile Light And Accessory Kit For The Same,” which was duly and legally issued by the
`
`USPTO on March 3, 2015 (the “‘5 18 Patent”). A true and correct copy of the ‘S18 Patent is
`
`attached hereto as Exhibit B.
`
`16.
`
`The ‘S18 Patent is valid and enforceable and Plaintiff has the full right to recover
`
`Page 3 of 7
`
`

`
`Case 6:16-cv-01087-CEM-KRS Document 1 Filed 06/21/16 Page 4 of 7 PageID 4
`Case 6:16—cv—OlO87—CEM—KRS Document 1 Filed 06/21/16 Page 4 of 7 Page|D 4
`
`for past infringement damages and the right to recover future royalties, damages and income.
`
`17.
`
`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff, and
`
`all predecessors in interest and/or implied or express licensees of the ‘518 Patent, if any, have
`
`complied with the marking requirements of 35 U.S.C. § 287 by placing a notice of the ‘5 1 8 Patent
`
`on all goods made, offered for sale, sold, and/or imported into the United States that embody one
`or more claims ofthat patent and/or providing actual or constructive notice to Defendant.
`
`18.
`
`Upon information and belief, Defendant has infringed and will continue to infringe
`
`at least Claim 1, 3, 5, 6, 7, 8 and 11 of the ‘518 Patent by, among other activities, making, using,
`
`selling or offering to sell in or importing into the United States its F9901-30-1, F9904-30-l, F9906-
`
`30-1 products. Defendant is liable for direct infringement, either literally or under the doctrine of
`
`‘equivalents, pursuant to 35 U.S.C. § 271 (a).
`
`19.
`
`Upon information and belief, Defendant has infr'mged and will continue to infringe
`
`at least Claim 1, 3, 5, 6, 7, 8, 9, 11, 12, 13, and 14 of the ‘518 Patent by, among other activities,
`
`making, using, selling or offering to sell
`
`in or importing into the United States its F9908-30
`
`products. Defendant is liable for direct infringement, either literally or under the doctrine of
`
`equivalents, pursuant to 35 U.S.C. § 271 (a).
`
`20.
`
`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
`
`the ‘5 18 Patent.
`
`21.
`
`Defendant’s infringement has 'mjured Plaintiff, and Plaintiff is entitled to recover
`
`damages adequate to compensate it for such infringement.
`
`22.
`
`Defendant’s infringing activities have injured and will continue to injure Plaintiff,
`
`unless and until this Court enters an injunction prohibiting further infringement and, specifically,
`
`enjoining further manufacture, use, sale, importation, and/or offer for sale of products that come
`
`within the scope of the claims of the ‘518 Patent.
`
`Page 4 of 7
`
`

`
`Case 6:16-cv-01087-CEM-KRS Document 1 Filed 06/21/16 Page 5 of 7 PageID 5
`Case 6:16—cv—O1087—CEM—KRS Document 1 Filed 06/21/16 Page 5 of 7 Page|D 5
`
`COUNT III
`
`(Infringement of U.S. Patent No. 8,967,844)
`
`23.
`
`24.
`
`Plaintiff repeats and re-alleges Paragraphs 1-5 as though fully set forth herein.
`
`Plaintiff is the owner by assignment of United States Patent No. 8,967,844 entitled
`
`“Low Profile Light And Accessory Kit For The Same,” which was duly and legally issued by the
`
`USPTO on March 3, 2015 (the “‘844 Patent”). A true and correct copy of the ‘844 Patent is
`
`attached hereto as Exhibit C.
`
`25.
`
`The ‘844 Patent is valid and enforceable and Plaintiff has the full right to recover
`
`for past infringement damages and the right to recover future royalties, damages and income.
`
`26.
`
`To the extent any marking or notice was required by 35 U.S.C. § 287, Plaintiff, and
`
`all predecessors in interest and/or implied or express licensees of the ‘844 Patent, if any, have
`
`complied with the marking requirements of 35 U.S.C. § 287 by placing a notice of the ‘844 Patent
`
`on all goods made, offered for sale, sold, and/or imported into the United States that embody one
`
`or more claims of that patent and/or providing actual or constructive notice to Defendant.
`
`27.
`
`Upon information and belief, Defendant has infringed and will continue to infringe
`
`at least Claims 1, 2, 7, 8, 9, 12, 14, 16, 17, 21, 22 and 24 of the ‘844 Patent by, among other
`
`activities, making, using, selling or offering to sell in or importing into the United States its F9901-
`
`30-1, F9904—30-1, and F9906-30-1 products. Defendant is liable for direct infringement, either
`
`literally or under the doctrine of equivalents. pursuant to 35 U.S.C. § 271 (a).
`
`28.
`
`Plaintiff has at no time either expressly or impliedly licensed Defendant to practice
`
`the ‘844 Patent.
`
`29.
`
`Defendant’s infringement has injured Plaintiff, and Plaintiff is entitled to recover
`
`damages adequate to compensate it for such infringement.
`
`30.
`
`Defendant’s infringing activities have injured and will continue to injure Plaintiff,
`
`Page 5 of 7
`
`

`
`Case 6:16-cv-01087-CEM-KRS Document 1 Filed 06/21/16 Page 6 of 7 PageID 6
`Case 6:16—cv—O1087—CEM—KRS Document 1 Filed 06/21/16 Page 6 of 7 Page|D 6
`
`unless and until this Court enters an injunction prohibiting further infringement and, specifically,
`
`enjoining further manufacture, use, sale, importation, and/or offer for sale of products that come
`
`within the scope of the claims of the ‘844 Patent.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff respectfully asks this Court to enterjudgment against Defendant
`
`and against its respective subsidiaries, successors, parents, affiliates, officers, directors, agents,
`
`servants, and employees, and all persons in privity or active concert or participation with
`
`Defendant, granting the following relief:
`
`A.
`
`the entry ofjudgment in favor of Plaintiff and against Defendant;
`
`B. a preliminary injunction prohibit'mg further infringement of each of the ‘968 Patent,
`
`the ‘S18 Patent, and the ‘844 Patent by Defendant,
`
`their agents, employees,
`
`'
`
`representatives, successors and assigns and those acting in privity or in concert with
`
`them;
`
`a permanent injunction prohibiting fllI’tl'lCI‘ infringement of each of the ‘968 Patent,
`
`the ‘5 18 Patent, and the ‘844 Patent by Defendant,
`
`their agents, employees,
`
`representatives, successors and assigns and those acting in privity or in concert with
`
`them;
`
`an award of actual damages against Defendant for damages arising from the
`
`infringement of each of the ‘968 Patent, the ‘518 Patent, and the ‘844 Patent
`
`pursuant to 35 U.S.C. § 284;
`
`an award of damages against Defendant for pre-judgment and post-judgment
`
`interest on the damages awarded, including an award of prejudgment interest,
`
`pursuant to 35 U.S.C. § 284, from the date of each act of infringement of the ‘968
`
`Patent, the ‘518 Patent, and the ‘844 Patent by Defendant to the day a damages
`
`Page 6 of 7
`
`

`
`' Case 6:16—cv—OlO87—CEM—KRS Document 1 Filed 06/21/16 Page 7 of 7 Page|D 7
`Case 6:16-cv-01087-CEM-KRS Document 1 Filed 06/21/16 Page 7 of 7 PageID 7
`
`judgment is entered and a further award of post-judgment interest, pursuant to 28
`
`U.S.C. § 1961, continuing until suchjudgment is paid, at the maximum rate allowed
`
`by law;
`
`F.
`
`the entry of judgment that this case is exceptional, and awardtreble damages,
`
`attorney fees, and the costs of this action, pursuant to 35 U.S.C. § 285;
`
`G.
`
`in the event a final injunction is not granted,‘a compulsory ongoing royalty; and
`
`H. such other relief to which Plaintiff is entitled under law, and any other and further
`
`relief that this Court or ajury may deem just and proper.
`
`JURY DEMAND
`
`triable.
`
`Pursuant to Fed. R. Civ. P. 38(b), Plaintiff demands a trial by jury on all issues so
`.
`
`/s/Mark F. Warzecha
`
`Mark F. Warzecha
`Florida Bar No. 95779
`
`WIDERMAN MALEK PL
`
`1990 W. New Haven Ave., Ste. 201
`
`Melbourne, Florida 32904
`
`Tel. (321) 255-2332
`Fax (321) 255-2351
`MFW@USLegalTeam.com
`I
`
`Page 7 of 7